Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA529203
`ESTTA Tracking number:
`03/28/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207418
`Plaintiff
`Southern Illinois Storm Shelters, Inc.
`ROMAN A BASI
`BASI BASI ASSOCIATES
`4501 W DEYOUNG, SUITE 200
`MARION, IL 62959
`UNITED STATES
`rbasi@taxplanning.com
`Motion to Suspend for Civil Action
`Roman A. basi
`rbasi@taxplanning.com
`/Roman A. Basi/
`03/28/2013
`Motion To Suspend Proceeding.pdf ( 3 pages )(893100 bytes )
`Civil Cover Sheet.pdf ( 2 pages )(52722 bytes )
`Complaint.pdf ( 13 pages )(56435 bytes )
`Exhibit A Picture of Mark.pdf ( 1 page )(68458 bytes )
`Exhibit B Advertisement.pdf ( 4 pages )(332960 bytes )
`Exhibit C Picture.pdf ( 1 page )(75049 bytes )
`Exhibit D Sec of State.pdf ( 2 pages )(119070 bytes )
`Exhibit E Letter.pdf ( 1 page )(175639 bytes )
`Exhibit F MO.pdf ( 1 page )(92207 bytes )
`Exhibit G Envelope.pdf ( 1 page )(901624 bytes )
`Summons.pdf ( 1 page )(56802 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`The Trademark Trial and Appeal Board
`
`Serial No. 85/513,614, for the mark: LIFESAVER STORM SHELTERS
`
`Southern Illinois Storm Shelters, Inc.,
`
`Opposer,
`
`vs.
`
`4SEMO.com, Inc.,
`
`Applicant.
`
`Opposition No. 91207418
`
`MOTION TO SUSPEND PROCEEDING IN VIEW OF PENDING CIVIL ACTION
`PURSUANT TO TRADEMARK RULE 2.117§a[
`
`COMES NOW the Opposer, Southern Illinois Storm Shelters, Inc. (hereinafter referred to
`
`as the “Opposer”), by and through its Attorney, Roman A. Basi, and hereby moves for
`
`suspension of these proceedings pursuant to Trademark Rule 2.117(a), 37 C.F.R. § 2.11"/(a).
`
`On March 25”‘, 2013, Opposer filed a complaint in the United States District Court for
`
`the Southern District of Illinois against Applicant, 4SEMO.con1, Inc. (hereinafter referred to as
`
`the “Applicant”), for trademark infringement and dilution among other claims.
`
`In support of this
`
`motion, Opposer submits herewith a copy of the Complaint for Trademark Infringement, Unfair
`
`Competition, Dilution, Consumer Fraud, and Deceptive Trade Practices, and further states as
`
`follows:
`
`Opposer’s Complaint filed on March 25"‘, 2013, requests, among other claims, that the
`
`United States District Court for the Southern District of Illinois declare that the actions of
`
`Applicant, 4SEMO.com,
`
`lnc., constitutes service mark infringement, unfair competition and
`
`dilution pursuant to the Lanham Act, 15 U.S.C. § 1125(a) and requests the court to issue both a
`
`preliminary and pennanent injunction against Applicant’s use of Opposer’s mark.
`
`

`
`In Opposer’s Amended Notice of Opposition, Opposer claims that Applicant’s use of
`
`Opposer's mark constitutes deceptiveness, false suggestion of a connection, and likelihood of
`
`confusion by consumers, among other claims.
`
`The pending civil action thus involves issues containing the same or similar elements to
`
`those involved in this proceeding, namely whether Applicant’s use of Opposer’s mark (1) causes
`
`a likelihood of confusion or deception among consumers and (2) causes a false suggestion of a
`
`connection leading customers to believe that products offered by Applicant were manufactured
`
`by Opposer. The determination of these issues by the District Court will likely be dispositive of
`
`the issues involved in this proceeding.
`
`Opposer
`
`therefore respectfully requests suspension of these proceedings pending
`
`determination of the civil action pursuant to Trademark Rule 2.ll7(a), 37 C.F.R. § 2.ll7(a).
`
`Whopper—Burger V. Burger King Corp, 17] U.S.P.Q. 805, 807 (T.T.A.B. 1971) (suspending
`
`cancellation proceeding in light of pending federal litigation because “the outcome of the civil
`
`action will have a direct bearing on the question of the rights of the parties herein and may in fact
`
`completely resolve all the issues”).
`
`Respectfully submitted this 28th day of March, 2013.
`
`Roman A. Basi
`
`4501 W. DeYoung, Suite 200
`Marion, Illinois 62959
`Tel. 618-997-3436
`
`Facsimile 618-997-8370
`
`rbasi@taxplanning.com
`Counsel for Opposer
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`The Trademark Trial and Appeal Board
`
`Serial No. 85/513,614, for the mark: LIFESAVER STORM SHELTERS
`
`Southern Illinois Storm Shelters, Inc.,
`
`Opposer,
`
`VS.
`4SEMO.com, Inc.,
`
`Applicant.
`
`Opposition No. 91207418
`
`I
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that I caused a copy of the foregoing this 28”‘ day of March, 2013
`to be served, via first class mail, postage prepaid, upon
`
`,..«
`
`/1
`
`
`
`Roman A. Basi
`
`Matthew H. Swyers, Esq.
`344 Maple Avenue West, Suite 151
`
`Vienna, VA 22180
`
`

`
`Case 3:13-cv-00297-DRH-SCW Document 2-1 Filed 03/25/13 Page 1 of 2 Page ID #16
` CIVIL COVER SHEET
`JS 44 (Rev. 09/11)
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
` DEFENDANTS
`Southern Illinois Storm Shelters, Inc.
`4SEMO.com, Inc.
`an Illinois Corporation
`a Missouri Corporation
`
`
`
`
`
`(b) County of Residence of First Listed Plaintiff Franklin, Illinois
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`
`
` County of Residence of First Listed Defendant Dunklin, Missouri
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
` NOTE:
`
`
`
`
`
`
`
`
`
`
` Attorneys (If Known)
`Not yet known
`
`
`
`
`
`3 Federal Question
`(U.S. Government Not a Party)
`
`
`4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`
`1 U.S. Government
`Plaintiff
`
`
` 2 U.S. Government
`Defendant
`
`
`
`
`
`
`
`
`
`
`
`
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Basi, Basi &Associates, 4501 West DeYoung Street, Suite 200,
`Marion, IL 62959, 618-997-3436, Marcus Renwick (AOR)
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff)
`
`
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF
` DEF
` PTF
` DEF
`
`
`Citizen of This State
`1
`
`1
`Incorporated or Principal Place
`4
`4
`
`
`
`
`
`of Business In This State
`
`
`
`
`
`
`
`
`
`
`
`
`
`Citizen of Another State
`2
`
` 2
`Incorporated and Principal Place
`5
` 5
`
`of Business In Another State
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Citizen or Subject of a
` Foreign Country
`
`3
`
`
`
` 3 Foreign Nation
`
`6
`
` 6
`
`FORFEITURE/PENALTY
`625 Drug Related Seizure
`
` of Property 21 USC 881
`690 Other
`
`
`
`
`
`
`
`LABOR
`710 Fair Labor Standards
`
` Act
`720 Labor/Mgmt. Relations
`740 Railway Labor Act
`751 Family and Medical
`
` Leave Act
`790 Other Labor Litigation
`791 Empl. Ret. Inc.
`
` Security Act
`
`
`
`
`
`IMMIGRATION
`462 Naturalization Application
`463 Habeas Corpus -
`
` Alien Detainee
`
` (Prisoner Petition)
`465 Other Immigration
`
` Actions
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BANKRUPTCY
`422 Appeal 28 USC 158
`423 Withdrawal
`
` 28 USC 157
`
`
`PROPERTY RIGHTS
`820 Copyrights
`830 Patent
`840 Trademark
`
`
`SOCIAL SECURITY
`861 HIA (1395ff)
`862 Black Lung (923)
`863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`865 RSI (405(g))
`
`
`
`
`FEDERAL TAX SUITS
`870 Taxes (U.S. Plaintiff
`
` or Defendant)
`871 IRS—Third Party
`
` 26 USC 7609
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`OTHER STATUTES
`375 False Claims Act
`400 State Reapportionment
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer Influenced and
`
` Corrupt Organizations
`480 Consumer Credit
`490 Cable/Sat TV
`850 Securities/Commodities/
`
` Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Environmental Matters
`895 Freedom of Information
`
` Act
`896 Arbitration
`899 Administrative Procedure
`
` Act/Review or Appeal of
`
` Agency Decision
`950 Constitutionality of
`
` State Statutes
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
` PERSONAL INJURY
` PERSONAL INJURY
`110 Insurance
`120 Marine
`310 Airplane
` 365 Personal Injury -
`130 Miller Act
`315 Airplane Product
`
` Product Liability
`140 Negotiable Instrument
`
` Liability
` 367 Health Care/
`150 Recovery of Overpayment
`320 Assault, Libel &
`
` Pharmaceutical
`
` & Enforcement of Judgment
`
` Slander
`
` Personal Injury
`151 Medicare Act
`330 Federal Employers’
`
` Product Liability
`152 Recovery of Defaulted
`
` Liability
` 368 Asbestos Personal
`
` Student Loans
`340 Marine
`
` Injury Product
`
`
` (Excl. Veterans)
`345 Marine Product
`
` Liability
`
` PERSONAL PROPERTY
`153 Recovery of Overpayment
`
` Liability
`
` of Veteran’s Benefits
`350 Motor Vehicle
` 370 Other Fraud
`160 Stockholders’ Suits
`355 Motor Vehicle
` 371 Truth in Lending
`190 Other Contract
`
` Product Liability
` 380 Other Personal
`195 Contract Product Liability
`360 Other Personal
`
` Property Damage
`196 Franchise
`
` Injury
` 385 Property Damage
`
`362 Personal Injury -
`
` Product Liability
`
`
`
` Med. Malpractice
`
`
`CIVIL RIGHTS
` PRISONER PETITIONS
`440 Other Civil Rights
` 510 Motions to Vacate
`441 Voting
`
` Sentence
`
` Habeas Corpus:
`442 Employment
`443 Housing/
` 530 General
`
` Accommodations
` 535 Death Penalty
`445 Amer. w/Disabilities -
` 540 Mandamus & Other
`
` Employment
` 550 Civil Rights
`446 Amer. w/Disabilities -
` 555 Prison Condition
`
` Other
` 560 Civil Detainee -
`448 Education
`
` Conditions of
`
`
` Confinement
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` REAL PROPERTY
`210 Land Condemnation
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`245 Tort Product Liability
`290 All Other Real Property
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`V. ORIGIN
`1 Original
`Proceeding
`
`
`
`
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
` COMPLAINT:
`
`VIII. RELATED CASE(S)
` IF ANY
`
`
`
`
` (Place an “X” in One Box Only)
`Transferred from
`4 Reinstated or
` 3 Remanded from
`2 Removed from
` 6 Multidistrict
`
`
`another district
`Reopened
`Appellate Court
`State Court
`Litigation
`(specify)
`
`
`
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
` 15 U.S.C. § 1125
`Brief description of cause:
`This is an action for service mark infringement, unfair competition and dilution.
`DEMAND $ Injunctive Relief and
`Money Damages
`
`
` 5
`
`
`
`
`
`
`
`
`
`CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`
`
`Yes
`
`No
`
`
`(See instructions):
`
`
`
`
`JUDGE
`
`
`
`DOCKET NUMBER
`
`
`
`DATE
`
`03/22/2013
`
`SIGNATURE OF ATTORNEY OF RECORD
`s/ Marcus S. Renwick
`
`FOR OFFICE USE ONLY
`
`
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`
`
`

`
`Case 3:13-cv-00297-DRH-SCW Document 2-1 Filed 03/25/13 Page 2 of 2 Page ID #17
`JS 44 Reverse (Rev. 09/11)
`
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
` The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`I.
`(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the
`official, giving both name and title.
`
`(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.)
`
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment,
`
`noting in this section “(see attachment)”.
` II.
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in
`one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
`
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
`Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and
`box 1 or 2 should be marked.
`
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of
`the different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
`III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`IV. Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
`sufficient to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature
`of suit, select the most definitive.
`V. Origin. Place an “X” in one of the seven boxes.
`
`Original Proceedings. (1) Cases which originate in the United States district courts.
`
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the
`petition for removal is granted, check this box.
`
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date.
`
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict
`litigation transfers.
`
`Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this
`box is checked, do not check (5) above.
`
`Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision.
`VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity.
`
`Example: U.S. Civil Statute: 47 USC 553
`
`
`
`
`
`Brief Description: Unauthorized reception of cable service
`VII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`
`Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
`
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`
`
`

`
`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 1 of 13 Page ID #3
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF ILLINOIS
`
`
`SOUTHERN ILLINOIS STORM SHELTERS, INC.
`an Illinois Corporation
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vs.
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No.
`13-297 DRH/SCW
`
`Jury Trial Demanded
`
`
`4SEMO.com, Inc.
`a Missouri Corporation
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION,
`DILUTION AND DECEPTIVE TRADE PRACTICES
`
`
`
`1.
`
`Plaintiff, Southern Illinois Storm Shelters, Inc. (hereinafter referred to as
`
`“Plaintiff”) brings this complaint against the Defendant, 4SEMO.com, Inc. (hereinafter
`
`referred to as “Defendant”) for Defendant’s infringement and dilution of Plaintiff’s trademark
`
`rights, and unfair competition and deceptive trade practices. For its complaint against
`
`Defendant, Plaintiff alleges as follows:
`
`
`
`I. NATURE OF THE ACTION
`
`
`
`2.
`
`This is an action for service mark infringement and unfair competition
`
`pursuant to the Lanham Act, 15 U.S.C. § 1125(a); dilution pursuant to the Illinois
`
`Trademark Registration and Protection Act, 765 ILCS § 1036/65 and the common law of
`
`the State of Illinois; and deceptive trade practices under the Illinois Uniform Deceptive
`
`Trade Practices Act, 815 Ill.Comp.Stat. § 510/1, et seq. Despite knowledge of Plaintiff’s
`
`extensive use and substantial common law rights in the mark, Defendant has attempted to
`
`register and use confusingly similar terms in connection with similar services in competition
`
`

`
`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 2 of 13 Page ID #4
`
`with Plaintiff and in violation of Plaintiff’s intellectual property rights. Because of the
`
`immediate and irreparable harm caused by Defendant’s improper use of Plaintiff’s mark,
`
`Plaintiff seeks preliminary and permanent injunctive relief and damages for Defendant’s
`
`illegal and unauthorized acts.
`
`
`
`3.
`
`The action results from Defendant’s infringement of Plaintiff’s mark, Lifesaver
`
`Storm Shelters (hereinafter referred to as the “mark”) (see an example of the mark attached
`
`as Exhibit A), through Defendant’s unauthorized use of the mark on Defendant’s website,
`
`related advertisements and on products not manufactured by the Plaintiff.
`
`
`
`
`
`II. JURISDICTION AND VENUE
`
`4.
`
`This Court has original subject matter jurisdiction over this action pursuant to
`
`28 U.S.C. §§ 1331 and 1338 (a) and (b) (patent, copyright, trademark and unfair
`
`competition). This Court has jurisdiction over Plaintiff’s related common law claim under 28
`
`U.S.C § 1367 (supplemental jurisdiction).
`
`
`
`5.
`
`Venue and personal jurisdiction are proper in the Southern District of Illinois
`
`under 28 U.S.C. § 1391 (b) and (c) and 15 U.S.C. § 1121, since, inter alia, a substantial
`
`part of the events or omissions giving rise to the claims occurred here in this district, the
`
`Defendant is doing business in this district, and Defendant has promoted goods and
`
`services in this district allowing customers to purchase storm shelters with a mark identical
`
`to Plaintiff’s mark. Further, Defendant is a foreign corporation, incorporated in the State of
`
`Missouri, and provides an internet website with a substantial effect on commerce in this
`
`district.
`
`
`
`

`
`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 3 of 13 Page ID #5
`
`III. THE PARTIES
`
`
`
`6.
`
`Plaintiff was incorporated in the State of Illinois on September 6th, 2000.
`
`Plaintiff’s principal place of business is located within this district at 450 East Illinois
`
`Avenue, Benton, Illinois 62812. Plaintiff is in the business of designing, manufacturing and
`
`selling fiberglass storm shelters and above ground metal safe rooms (hereinafter
`
`collectively referred to as “Shelters”). Plaintiff has a website (www.sheltersonline.com)
`
`which prominently displays the mark, details the products offered by Plaintiff and where the
`
`products can be purchased (for a copy of the webpage see attached Exhibit B). Plaintiff
`
`attaches the mark to the sides of all of the Shelters they manufacture (see attached Exhibit
`
`C).
`
`
`
`7. Defendant is a corporation organized and existing pursuant to the laws of the
`
`State of Missouri. Defendant’s principal place of business is 314 W. Laclede, Malden, MO
`
`63863. Defendant is in the business of providing general contracting work and is also a
`
`dealer and installer of storm shelters. Defendant has a website (www.4semo.com) which
`
`details the services and products offered by Defendant. Upon Plaintiff’s information and
`
`belief, the Defendant is doing business in this district and has promoted goods and services
`
`allowing customers to purchase storm shelters with a mark identical to Plaintiff’s mark.
`
`
`
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`IV. FACTUAL BACKGROUND
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`8.
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`Plaintiff’s valuable intellectual property:
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`a. Since long before the acts of Defendant described herein, Plaintiff has,
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`since at least as early as 2002, continuously used the mark in connection
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`with the marketing and sale of storm shelters to customers in Illinois and
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 4 of 13 Page ID #6
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`throughout the United States (see Exhibit D for a copy of Plaintiff’s active
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`registration of the assumed name “Lifesaver Storm Shelters”).
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`b. From its inception, Plaintiff’s Lifesaver Storm Shelters have been widely
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`accepted by the consuming public, with average annual sales revenue of
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`approximately $1.2 million.
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`c. Plaintiff affixes the mark to all of the storm shelters it manufactures and
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`has advertised and/or marketed in Lifesaver Storm Shelter products in
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`numerous forums and publications, including newspapers and trade
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`shows across various states.
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`d. Plaintiff’s Lifesaver Storm Shelters have received substantial media
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`attention, including, but not limited to, being featured in Season 2,
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`Episode five, of the television show “Shipping Wars” on A & E, an
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`appearance on the television show “Good Morning America” and several
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`appearances on local news broadcasts.
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`e. As a result of Plaintiff’s extensive sales, marketing and advertising
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`expenditures, and unsolicited media mentions related to Plaintiff’s
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`Lifesaver Storm Shelters products, Plaintiff has become well-known
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`among the relevant consuming public as the single source of storm
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`shelters marketed under the Lifesaver Storm Shelters mark.
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`f. Due to Plaintiff’s well-known reputation for producing affordable, high-
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`quality storm shelters, Plaintiff has established a network of seventy
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`“dealers” across the United States that sell Plaintiff’s Shelters using the
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`name Lifesaver Storm Shelters.
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 5 of 13 Page ID #7
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`g. Defendant, with knowledge of Plaintiff’s popularity and reputation
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`throughout the industry, desired to become one of Plaintiff’s “dealers”.
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`h. Defendant became a dealer of Lifesaver Storm Shelters in 2005 and
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`Plaintiff continued to provide Lifesaver Storm Shelters to Defendant until
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`2012. During this time, Defendant was given access to storm shelters
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`and advertising materials containing the mark.
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`i. Prior to the association between Plaintiff and Defendant, Plaintiff was
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`engaged in commercial business with a Missouri Company using the
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`name Life-Saver Storm Shelters, which said Company retails and installs
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`Shelters provided by Plaintiff in Missouri and across the Midwest part of
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`the United States.
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`j. Life-Saver Storm Shelters sent a letter to Plaintiff on February 2nd, 2002
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`at the top of which letter was a copy of the Business Card used by Life-
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`Saver Storm Shelters evidencing prior usage of the Mark (see attached
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`Exhibit E).
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`k. Life-Saver Storm Shelters, LLC was incorporated in the State of Missouri
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`on October 18th, 2002 and is 100% owned by Plaintiff (see attached
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`Exhibit F).
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`l. Plaintiff has established prior usage of the mark Lifesaver Storm Shelters
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`since at least February 15th, 2002, and Plaintiff, as the “parent” company
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`of Life-Saver Storm Shelters, LLC has established the trademark Life-
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`Saver Storm Shelters as a filed Limited Liability Company name in the
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`State of Missouri in use in commerce as early as October 18th, 2002.
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 6 of 13 Page ID #8
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`m. Life-Saver Storm Shelters, LLC sent a warranty registration card to
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`Plaintiff in June of 2003 via US Mail. Plaintiff retained a copy of the
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`signed Warranty Registration Card and the envelope with the US Mail
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`Postmark Date and cancelled stamp as evidence of the prior usage of the
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`Mark, Lifesaver Storm Shelters (see attached Exhibit G).
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`9.
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`Defendant’s Unauthorized use of Plaintiff’s Intellectual Property:
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`a. Plaintiff has never authorized, licensed, or otherwise permitted the
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`Defendant to use Plaintiff’s mark, other than in connection with the sale of
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`Plaintiff’s Shelters.
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`b. Without any authorization, license or authority from Plaintiff, Defendant
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`has marketed and advertised Plaintiff’s mark on its website.
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`c. Upon information and belief, prior to Defendant’s first use of Plaintiff’s
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`mark, Defendant had access to Plaintiff’s webpage, storm shelters and
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`other materials, which displayed Plaintiff’s mark, and Defendant knew or
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`should have known of Plaintiff’s mark and related services and the
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`valuable reputation and goodwill symbolized by the Plaintiff’s mark and its
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`association with Plaintiff.
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`d. Upon information and belief, at the time Defendant engaged in the acts
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`complained herein, Defendant had access to and actual knowledge of
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`Plaintiff’s mark. Despite Plaintiff’s prior rights, Defendant used the mark
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`in advertising and marketing, and on its website, a mark confusingly
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`similar to the Plaintiff’s mark with the purpose and intention of trading off
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`of Plaintiff’s goodwill and reputation.
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 7 of 13 Page ID #9
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`e. Upon information and belief, consumers can currently access Defendant’s
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`services and obtain Shelters not manufactured by Plaintiff, but have
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`Plaintiff’s mark affixed to their sides.
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`V. DEFENDANT’S UNAUTHORIZED USE OF THE PLAINTIFF’S MARK
`CONSTITUTES A LIKELIHOOD OF CONFUSION
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`10. Defendant’s unauthorized use of the Plaintiff’s mark on Shelters not
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`manufactured by Plaintiff is likely to mislead, deceive, and confuse consumers, who are
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`likely to assume that Shelters bearing Plaintiff’s mark were manufactured by Plaintiff.
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`11. Due to the aforesaid acts by the Defendant, Plaintiff will suffer substantial
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`damages and injury. Plaintiff has no adequate remedy at law, and unless Defendant is
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`restrained and enjoined by the Court, the acts will be continued and will continue to cause
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`damage to Plaintiff’s goodwill and business reputation. Due to the potential for loss of
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`customers and sales, and the possibility of Defendant providing an inferior product using
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`Plaintiff’s mark, Plaintiff cannot ascertain the precise amount of its damages at this time.
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`VI.
`COUNT I: FEDERAL TRADEMARK INFRINGEMENT VIOLATION OF
`SECTION 43(A) OF THE LANHAM ACT
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`12. Plaintiff claims violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a), based on federal trademark infringement. Paragraph’s 1-11 are restated as if set
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`forth fully herein.
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`13. Defendants unauthorized use of the Plaintiff’s mark, such as in advertising
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`and on the Defendant’s website, is likely to cause confusion, mistake, or deception as to
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`the origin, sponsorship, or association with Plaintiff’s mark. Consumers are likely to believe
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 8 of 13 Page ID #10
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`that Defendant’s services are licensed by, sponsored by, or associated with the Plaintiff.
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`Defendant’s unauthorized use of the mark falsely represents Defendant as being connected
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`with Plaintiff and places Plaintiff’s reputation beyond its control.
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`14. Plaintiff has no adequate remedy at law and Defendant’s unlawful conduct will
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`continue to damage Plaintiff unless enjoined by this Court.
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`15. Based on Defendant’s previous and continuing knowledge of Plaintiff’s mark,
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`Defendant’s trademark infringement is willful.
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`16.
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`VII.
`COUNT II: FEDERAL UNFAIR COMPETITION
`VIOLATION OF SECTION 43(A) OF THE LANHAM ACT
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`For its second ground for relief, Plaintiff hereby alleges federal unfair
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`competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`Paragraphs 1-15 are restated as if set forth fully herein.
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`17. Defendant’s adoption and use of the Plaintiff’s mark, as hereinabove
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`pleaded, constitutes use of a false designation of origin or a false representation, which
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`falsely designates, describes or represents the Defendant’s services and business as
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`originating from or being in connection with Plaintiff, which is not the case, and thereby
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`constitutes a false description or representation used in interstate commerce.
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`18. Plaintiff has been and is being damaged by such violation and has no
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`adequate remedy at law. Further, Defendant’s unlawful conduct will continue to damage
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`Plaintiff unless enjoined by this Court.
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`19. Based on Defendant’s previous and continuing knowledge of Plaintiff’s mark
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`and continued activities, Defendant’s federal unfair competition violation is willful.
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 9 of 13 Page ID #11
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`VIII.
`COUNT III: VIOLATION OF ILLINOIS UNIFORM DECEPTIVE TRADE
`PRACTICES ACT
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`For its third ground for relief, Plaintiff hereby alleges a deceptive trade
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`20.
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`practice violation of the Illinois Uniform Deceptive Trade Practices Act 815 Ill.Comp.Stat. §
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`510/1, et seq. Paragraphs 1-19 are restated fully as if set forth fully herein.
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`21.
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`The Illinois Uniform Deceptive Trade Practices Act 815 Ill.Comp.Stat. § 510/2
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`states that “A person engages in a deceptive trade practice when,…the person (1) passes
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`off goods or services as those of another; (2) causes likelihood of confusion or of
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`misunderstanding as to the source, sponsorship, approval, or certification of goods or
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`services; (3) causes a likelihood of confusion or of misunderstanding as to affiliation,
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`connection, or association with or certification by another;” Further, in order to prevail “…,
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`a plaintiff need not prove competition between the parties or actual confusion or
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`misunderstanding.” 815 Ill.Comp.Stat. §510/2
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`22. Defendant’s unauthorized use of Plaintiff’s mark, as pleaded herein, on
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`products and in connection with services similar to Plaintiff’s causes a likelihood of
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`confusion and deceives the public in to believing the Defendant is affiliated or connected
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`with the Plaintiff in violation of Illinois Uniform Deceptive Trade Practices Act 815
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`Ill.Comp.Stat. §§ 510/1-7.
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`23. Plaintiff has been and is being damaged by such violation and has no
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`adequate remedy at law. Defendant’s unlawful and willful conduct will continue to damage
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`Plaintiff unless enjoined by this Court.
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`Case 3:13-cv-00297-DRH-SCW Document 2 Filed 03/25/13 Page 10 of 13 Page ID #12
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`24. Based on Defendant’s previous and continuing knowledge of Plaintiff’s mark
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`and continued activities, Defendant’s violation of Illinois Uniform Deceptive Trade Practices
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`Act is willful.
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`25.
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`IX.
`COUNT IV: VIOLATION OF ILLINOIS TRADEMARK REGISTRATION
`AND PROTECTION ACT AND COMMON LAW
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`For its fourth ground for relief, Plaintiff alleges dilution in violation of the Illinois
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`Trademark Reg